I'.EI)ERAL REPORTER ·. vol.
ent. but deciding, that it is substantially the same invention:, apd that Ehrlich device. possesses still Cj1nnot recover: in, this case, (defendants' patent having been first granted,) unless it is shown in some way that Ehrlich was the inal and firsHpventor of the device; and it has not beet;l so shown to my satisfuction, ;There is evidence in. the record as to whether Knopp or Ehrlich was the original and. first inventor, unless the that Ehrlich's applicat,ioq,for a patent WaS first filed creates a presumption that he was the first inventor. But the date of an application for a patent does not necessarily or,: ordinarily inqicate the true date at which the invention wll.'$ made,1>eGause inyentors sometimes,. if n<;>t often, fail to make an application for a patent for months after the .invention is complete. In $;; 1?p..r it appears, as before stated, that Knopp first obtained a patent, application for one placed on file. Under tlie circumstances. and in the absence of other av.idence on the subject. the court will not presume that Ehrlich was the nrst inventor, and the burden is on complainanL to establish that fact. It is just as reasonable to infer that Knopp was the first inventor. I have not stopped to consider whether, in a bill of this character, which is merely a suit for infringemenh it is for the complainant to show that Erlich was the first iilVEmtor of thE! 'alleged ihfringing device, a:nd thus invalidate the prior For present purposes, it is sufficient to say that, if the fact iIi question' may be shown, it has not oeen, and a decree ,mustg(j against t4e9omplainant on that . Another feature of the case justifies comment. It was admitted at the hearing that the complainant is not manufacturing,and has not manufactured, any machines under the Ehrlich patent, or put them on the any IIianner. It is manufacturing a. machine made under a patent five years previous to the Ehrl1ch.patent, which it evidently considers' superior to the Ehrlich machine, a'ildsE:emsto be ing the to ot1?,er manufacturerfil of roll-papei" machines out of the market. Whatever its technical right to make such use of the patent may be, its conduct in this respect evidently deprives the public of whatever advantages the Ehrlich invention possesses, contrary to the true policy of the patent laws. . The bill is dismissed.
(Jalluary 8, 1891.),
'raAYElh1..; 1. UnUElr the authQrities cited, it must be conceded that, ,iu theab,seD.9Elof proof showing the true date of each invention. the presumptiqn is. that eac4; i)ilventiQu Wal;l made at the time the respectwere ,filed,. Bate8 v. Coe, 98 U. S. 23, 34; Pem'l'lington Rep. 46ih,1)cme v.Manufacturing Co.,a,Biss. 380. cording was,·filed December 2, 1887, on Sept,ember,8, as thereis no EhrliQh'lI Qp.ginal applicatioJl was modified oratnendild
in any respectafteritwasflled, it must beconcededtasthe pfoof stands, that Ehrlich is presumptively the first inventor., ' 2. But although Ehrlich's application was first filed, defendants' putent antedates his by eight months,and be manufacturing paper rollers strictly in accordance with the claims of their patent. PlaintitJ"s contention is that defendants' patent issubotdinate to the Ehrlich patent, and that:1tis for the same invention, ,covered by the first, three claims of the Ehrlich patent. It has accordingly filed a bill in the ordinary form for an alleRed infringement of its excltlsive rights.' In view of these facts, defendants insist that complainant cannot main.. taill a simple bill for infringement,in viewof the priority of their let.:' ters, but thatit should couple with its bill for .infriqgement Ii count un. der section 4918, to have the Knopp patetit adjudged void, in whole or in part, because of the alleged interference. The question thus raised seems to be one of first impression; at all events, I have not been referred to any case where the precise point has been considered and adjudicated. It was not considered in the case of Lane v. Soverign, 43 Fed. Rep. 890, for the decision in that case turned merely on a question of pleading, the cause having been submitted on the bill, answer, and replication; nor was the question at all discussed in Johnsen v. Passman, 5 Fish. Pat. Cas. 471, nor in the case'of Young, 3 Fish. Pilt. Cas. 335, cited by defendants' counsel. In the latter case,the defendl ant was acting under a reissued patent later in date'than complainant's',' but defendant's original patent antedated complainant's palent. In the ordinary case of a bill for infringement, filed by the holderof a senior patent against the holder of a junior patent. the claims whereof conflict, it is no defense that the defendant is acting under a patent.' The reason of the rule, as I apprehend, is that by the grant of the first leHers the government exhausts its power to grant to another person a oly of the Bame invention, hence the holder of the prior patent is at liberty to treat the subsequent patent as utterly void, in so far as it conflicts with the earlier grant. Rob. Pat. § 370. But there is an obvious distinction between such a case and one where the defendant procef'ded against holds the prior grant, and is operating therettnder in good faith. Ordinarily a prior grantee of a right, privilege, or estate cannot be proceeded against as a trespasser by a subsequent grantee of the same grantor, even though the prior grant is for some reason voidable, until the proper steps have been taken to have the invalidity of t'leprior grant judiciallyascertained and declared. The principle last referred to seems ",' to be applicable to the case at bar. It ma,y oethat the, commissioner of patents erred in granting a patent to the defendants while the earlier application of Ehrlich was on file; but, be that as it may, if sucb action W;lS erroneous, it ,was an error, in my judgment, that merely renders the patent voidable in a direct proceeding 'brought its invalidity, as, the government clearly had power when tbe grant was made to issue a patent for the invention in question. A suit for infringement which proceeds plainly upon the theory that the defendants are trespassers, although acting stcii!tly within
the terms of a prior. grant, and that they are liable to the subsequent patentee for profits and damages, even before the invalidity of the prior grant had been judicially ascertained, w.ould not seem to be a proper remedy, in view of the fact that a more appropriate remedy has been provided by statute. Section 4918 is well designed to afford relief in a case like the one at bar. It provides, in substance, that whenever there are interfering patents, anyone interested in anyone of them may have reliefagainst the patentee by a suit in equity, and the court, after due proceedings had according to the course of equity, may ad. judge either of the patents void in whole or in part. The judgment in such case binds the parties thereto and those acquiring title to or an interest in the patent in qUestion subsequent to such adjudication. Under the provisions of this section, the complainant, if its contention is well founded, may obtain a decree determining to what extent defendants' prior patent is subordinate to its own, and to what extent, if any ,the claims of the prior patent are invalid. Upon the whole, therefore, I conclude that in a case like the one at bar, where defendant holds and is operating under a prior grant, it is incumbent on the plaintiff to proceed, in the first instance, under section 4918, to have the invalidity of defendants' patent, in whole or in part, judicially ascertained and. declared. That method of procedure appears to the court more regular, and more in accordance with the analogies of the law, than to permit the complainant to proceed against the defendants merely for infringement. It has been held that a Qount for infringement and a (,.Qunt under section 4918 may be joined in the same pill, and I can see no objection to that course of procedure. Lench v. Chandler, 18 Fed. Rep. 262; Holliday v. Pi1<khardt, 29 Fed. Rep. 853j Swift v. Jenk8, Id. 642. The decree heretofore el;ltered was for the right party, and will be allowed to stand, but it will: be modified so as to show that the dismissal ordered is without prejudice. to the right to proceed as herein indicated.
PARKset at v. BAyet at
E. D. January 3, 1891.)
PATENTS FOR INVENTIONs-INrRINGEMENT-NlJT-Looxs.
In a patent for a nut·lock, claim 1 is. for a combination, with a nut having a notched or serrated face, of a rectangular washer. split across ·ol1e of its sides, the ends thus formed being bent in opposf.te directions. and" each· being beveled from . one side to the other, to form a ,. sl.lbstantiaUy as described. Claim 9 also describes the ends of the split washer as being beveled to form a knife edge. In the speciftcations the ends of the washer are said to have "a sharp edge, " and "sharp to engage the serrated surface of the nut. .Bel.d, that the pat· ent m'lst be restricted to washers haVing beveled sharp edges. and the use of sim. 11a.r washers with squve edges does not conlltitute an infringement..